As the EPC is the legal basis for the European Patent Organization (EPO) and its executive arm, the patent laws of the EPC Contracting States and the examination procedures of the EPO will also change as a result of the EPC amendments. In this revision, a number of detailed provisions on the EPO's examination procedures have been moved from the EPC to the Implementing Regulations, so as to enable the EPO to adapt to the changes in the examination procedures, and to maintain a user-friendly interface for the benefit of applicants and patent application attorneys.
The following are some of the main amendments to the EPC2000 and their likely impact on European patent practice.
Patentability of inventions
EPC2000 paragraph 521 provides that "a European patent is granted for any invention in all fields of technology if it is novel, inventive and industrially useful." The above wording is not materially different from that of EPC paragraph 521 (which provides for the grant of a European patent for any new invention which is inventive and capable of industrial application), but, in keeping with paragraph 271 (first sentence) of the TRIPs Agreement, it is made clear that the scope of protection of a European patent covers "all fields of technology". ". However, the EPO has indicated in this regard that the introduction of the "all fields of technology" scope will not change the current practice of not being able to grant patents on computer software and business methods.
The provisions relating to patentability exclusions and exceptions have been retained by EPC 2000 in Articles 52 and 53 respectively. It is noteworthy that Section 524 of the EPC (Section 52.4 of the EPc, surgical or therapeutic methods for use on the human or animal body and diagnostic methods for use on the human or animal body shall not be considered to be inventions capable of industrial application within the meaning of the first paragraph. This provision does not apply to products, in particular substances or compositions, used for the purpose of using the said methods.) The move to Article 53c of the EPC2000 does not amend the substance, but maps out a slight change in the philosophical conception of the patentability of methods relating to treatment. In EPC2000, any surgical or therapeutic methods for human or animal bodies and diagnostic methods practiced on human and animal bodies remain outside the scope of European patentability. As most such patent applications may fall within the definition of patentable invention in Article 52.1 of the XEPC, out of respect for public **** health and related policy considerations, EPC2000 now classifies such patent applications as unpatentable inventions from the previous exclusion of inventions, on the basis of the patent application's lack of industrial utility as a legal fiction (a legal fiction, which is an assumption of fact made by a court as a basis for deciding a question of law). A legal fiction is an assumption of fact made by a court of law as a basis for deciding a question of law, i.e., an assumption that a fact is true, even though it may not be true. Mooting is made primarily in the course of judicial reasoning to change the application of a rule of law). Such method patent applications are denied. Furthermore, like EPc section 524, EPC2000 section 53c does not apply to the products, in particular substances or syntheses, used for the purpose of using the methods described above. Therefore, the minor changes to EPC2000 Articles 52 and 53 will not have a significant impact on current European patent practice.
Novelty and Prior Art
Like other patent law systems in the world, the EPc adopts the principle of novelty in determining whether a patent application falls within the scope of prior art, such as EPc paragraph 54 2 (EPc paragraph 54 2 prior art shall be deemed to include the use or any other method of making accessible to the public, by means of a written or oral recital, before the date of the filing of the application for a European patent). of something) paragraph (EPC2000 paragraphs 541 and 54 2 retain the same formulation of the corresponding EPc provisions) provides. Generally, a novelty grace period is not granted for disclosure of inventions that became known to the public before the filing date (or priority date) of the application.
In order to avoid double granting of patents, paragraph 54.3 of the EPc provides that a European patent (i.e. a prior European right) which is filed first, even if published on or after the filing date of the later application, constitutes "prior art" for the latter application and deprives the latter of its novelty, but paragraph 54.4 adds that Paragraph 54.3 of EPC2000 provides that if a European (or European-PCT) patent application with a prior priority date has the same disclosed subject matter as a later filed European patent application and the date of disclosure is later than the filing date of the later application, the latter application is deemed to have lost novelty, without affecting its inventive step. The latter patent application shall be deemed to have lost its novelty, without prejudice to its inventiveness.
Before the amendment, according to paragraph 54.4 of the EPc and Article 23a of the Regulations, an earlier European patent application constituted prior art in the same designated Contracting States as the later application only upon payment of the designated national fee. The negative consequences of this provision were twofold
Firstly, in view of the different prior art in different countries, patent applications could make different claims in different designated countries, and secondly, as the designating country fee could be paid at the latest within six months after the publication of the search report, it was not possible to ascertain whether or not a prior application constituted prior art in relation to a subsequent application even after the earlier disclosure, thus resulting in legal uncertainty. Therefore, to eliminate this confusion, EPC2000 deleted EPC paragraph 54.4. According to EPC2000 paragraph 54.3, a European patent application filed earlier and validly disclosed constitutes prior art with respect to the novelty of a subsequent application filed in all EPC Contracting States (and not only those Contracting States where the earlier and subsequent applications *** are designated together) which has the same disclosed subject matter as the earlier application.
Article 54(3) of EPC2000 does not have retroactive effect in respect of European patent applications (including European PCT applications) and granted European patents which were pending validly on or before the date of entry into force of EPC2000.
Patent applications relating to treatment
The provision in EPC paragraph 54.5, which provides that an applicant may apply for a patent on a known substance or composition used for the first or second time in a method relating to treatment, surgery or diagnosis, as a compromise to the unpatentability of the said method, has been retained in EPC 2000 paragraphs 54.4 and 54.5.
Section 54.4 of the EPC2000 provides that surgical or therapeutic methods for use on human or animal bodies and diagnostic methods for use on human or animal bodies shall not be considered to be inventions capable of industrial application as provided for in Section 53c of the EPC2000 (EPC2000 Section 53c). This provision does not apply to products, in particular substances or compositions, used for the use of the above methods). Known substances or compositions used in the excluded methods are not included in the prior art and are thus entitled to the first medical indication claim, which may be expressed in language stating an intended therapeutic purpose, such as "composite x is used as a pharmaceutical agent".
Previously, any secondary or further medical use of a newly discovered known substance or compound was protected by Swiss-type claim language. This amendment strategically expands the novelty standard to include the use of a known substance or compound "for the manufacture of a pharmaceutical preparation for a specific new and inventive therapeutic application" within the scope of novelty. As the national laws of most EPC Contracting States lack consistency with the EPC in recognizing claims for secondary medical uses, EPC 2000 paragraph 54.5 is intended to harmonize the practice of Contracting States with respect to such claims, so that applications for patents on such methods are no longer excluded by national patent laws.
EPC2000 paragraph 54.5 provides that substances or compositions referred to in paragraph 54.4 for a particular use in the methods referred to in paragraph 53c are eligible for patentability claims, provided that the use is novel, e.g. "composite Y is used in the treatment of z". In such a claim, the compound Y is a known pharmaceutical agent and is not used exclusively for the treatment of z. However, until the EPC Board of Appeals and the courts of the Contracting States have worked out a solution to the discrepancy in the scope of claims between the old and the new form of claims for secondary medical uses, a cautious approach must be taken with respect to such applications. In addition, EPC2000 paragraph 54.5 applies only to new uses of known substances or compositions and does not apply to new uses of known devices in such methods. This amendment has a retroactive effect for European patent applications (including European PCT applications) that were not granted before the entry into force of EPC2000 and are still pending.
Interpretation of claims in patent applications
Article 69 of EPC2000 provides that the scope of protection granted by a European patent or a European patent application (including a European PCT application) depends on the content of the disclosed claims, but that the specification of the invention together with the accompanying drawings shall be used to interpret the claims. In order to further clarify the interpretation of claims, EPC2000 has attached a supplementary interpretation protocol to Article 69 as a guiding principle of claim interpretation, which is conducive to harmonizing the interpretation of European patent claims by the courts of the Contracting States of the EPc, providing fair protection to the patentee and reasonable legal certainty to third parties.
For many years, the EPO's legal framework for the interpretation of claims in patent applications was not harmonized with the national jurisdictions of the EPc Contracting States. The EPO now recognizes that the EPc Contracting States have not yet agreed on the interpretation of patent application claims in the Supplementary Interpretation of Article 69 of EPC 2000. In order to facilitate this process, the concept of equivalence has been introduced in Article 2 of the Supplementary Interpretation of Article 69, which requires the courts of the Contracting States to give due consideration to any claims which are deemed equivalent to those indicated in the claims. However, the definition of "equivalence" has not yet been agreed upon by the diplomatic conferences of member States. The absence of a binding definition will therefore threaten efforts to harmonize the interpretation of European patents among the member states of the European Patent Organization.
Priority Requirements
In order to align the EPO's priority recognition guidelines with the TRIPs Agreement, EPC 2000, Article 871b, provides that a European patent application may be given priority within 12 months of the filing of the first application, provided that the underlying application was filed in any member state of the World Trade Organization, even if that state is not a member state of the Paris Convention. enjoys priority.
Substantial revisions to the formal requirements for priority have been made, in part, due to the frequent use of electronic communications by national patent offices. epc2000 provides that an applicant is only required to translate a priority document into the official language of the European Patent Office if there are serious doubts about the validity of the priority. If the applicant does not provide a complete statement of priority at the time of filing the European patent application, there is no further decisive disadvantage to the anticipated priority. However, it is still a "better" option for the applicant to produce a detailed statement of priority at the time of filing, and to submit the relevant supporting documents to the EPO within 16 months of the date of the original priority application.
In accordance with Article 122 of the EPC 2000, if an applicant fails to file a European patent application within the Paris Convention priority period, the application can be remedied by re-establishing rights. Of course, the applicant must fully satisfy strict "almost exacting" criteria in order to effectively reinstate the patent application.
Agent-Client Privilege
In the course of their business relating to the prosecution and grant of European patents, European patent attorneys and their clients will exchange, as necessary, confidential information which must be kept strictly confidential. Recognizing the need for confidentiality, EPC 2000 grants a permanent privilege against disclosure of documents exchanged between European patent attorneys and their clients, and provides that this privilege applies to all European Patent Office proceedings.
This evidentiary privilege applies to any documents and information relating to the assessment of the patentability of an invention, the preparation of documents for a European patent application, the execution of the application, and any documents advising on the validity of a European patent and the scope of protection or infringement.
Interlocutory limitation procedure
EPC 2000 Articles 105b and 105c provide that the patentee has the right to submit to the EPO an application for ex parte limitation or withdrawal of a granted European patent (from the date of grant of the patent as recorded in the European Patent Gazette) at any time in all designated EPC Contracting States and Extension States, without having to provide the EPO with relevant information concerning the prior rights. The European Patent Office is not required to provide the European Patent Office with information on prior rights. Restricted European patents are published by the EPO. The intermediate restriction procedure facilitates the patentee's ability to make substantive amendments to European patents that are at risk of invalidation at the level of the European Patent Office.
The intermediate restriction procedure (EPC 2000 Article 105a-c, Regulations 90-96) was added and amended at the request of the patentee to withdraw or introduce claim limitation amendments, exceptions, and amendments to the patent specification and specification drawings. The patentee may apply to the EPO at any time after the grant of the patent, except during the opposition procedure period. In addition, limitation proceedings before the EPO do not have priority over ongoing national proceedings, in particular withdrawal proceedings. In the event of a withdrawal decision by a national court, the period of pendency of the final decision of the EPO will therefore lag.
EPC2000 imposes strict limitations on amendments to claims by the patentee: the patentee must propose amendments to the claims on the substance, not just on the face of the text.j Compliance with the requirement of conciseness and clarity of Article 84 of EPC2000: compliance with the strict requirements of Article 123 of EPC2000 on claim subject matter. However, the intermediate restriction procedure does not require the EPO to conduct a substantive examination of whether the amended claims comply with the patentability requirements of Articles 52 to 57 EPc. Furthermore, if the EPO rejects an intermediate limitation or withdrawal request made by the patentee, the patentee may not appeal against it.
Limitation Claims
EPC 2000 Article 1 38 provides the patentee with the right to self-imposed limitations on European patents subject to national invalidation proceedings with a view to structuring and harmonizing the practice of limitation proceedings in all EPC Contracting States. The amended claims of the patent application will be used as the basis for the national phase of the procedure. However, if a national jurisdiction considers that the patentee's restricted claims are not sufficient to restore the validity of the patent, it will reject the amendment and request that the patent be restricted again or withdrawn.
Petition for review before the Enlarged Board of Appeals
The EPc provides that no party has the right to petition the Enlarged Board of Appeals for review of a decision of the Board of Appeals, even if it believes that there has been a procedural infringement in principle of its rights. Therefore, the relevant decisions of the EPO Board of Complaints are also overshadowed by the exemption from review in the EPc Contracting States.
EPC 2000 Article 112a and Regulations 104-110 grant a limited right of further judicial review of the Board's decisions to the patent applicant, the patentee and the affected party. The complainant may apply to the Enlarged Board of Appeals, but only on certain specified grounds, including procedural errors of principle and criminal acts committed during the formulation of the resolution. The procedural error of principle should be substantial, such as the selection of a member of the Board in conflict with the case under consideration, the party's obstruction of the full consideration of the case, and serious prejudice to the other party's right to be heard (which is considered by the EPc to be of paramount importance and is provided for in Article 113 of the EPc and Article 113 of the EPC2000). The above-mentioned criminal acts, recognized only by a national court or body of a certain level, constitute a valid ground for an application for review before the EPc, and the sentence shall also be valid in the designated Contracting State if it is found to be contrary to the relevant provisions of the criminal law.
The parties to the proceedings are not entitled to request the Expanded Appeals Board to review whether the Appeals Board has correctly applied the substantive law of the EPc in the prior proceedings. Consequently, such a request does not have a suspensive effect on the prior (defective) judgment. Thus, until the final date of publication of the request by the Enlarged Board of Appeals, the withdrawn patent is still considered withdrawn, and third parties using the invention in good standing may continue to use the patent without paying royalties or penalties. If the petition is successful, the decision of the Enlarged Board of Appeals will overrule the prior decision of the Board of Appeals and the effect of its judgment, and will be returned to the Board of Appeals for further proceedings.
Determination of the European filing date
Under Article 80 of the EPC, an applicant may obtain the filing date only in strict compliance with a number of requirements, including the specification of the patent application in the language specified by the EPc and the claims including at least one claim. epc 2000 significantly simplified the procedure for obtaining the filing date and moved a large number of filing date requirements to the implementing regulations. EPC2000 significantly simplifies the process of obtaining an application date and moves a large number of the requirements for obtaining an application date to the implementing regulations. According to EPC2000, an applicant must include a specification of the patent application (in any language) in the application file, and may temporarily exclude the claims, but should submit them within two months after the filing of the application. However, in practice, in view of the strict requirements of Article 123 2 of the EPC 2000 on the matter of filing, the applicant should be careful in this regard. The applicant may consider filing a broad (supporting) claim for each possible independent claim item at the time of filing and amending it during the approval process.
Regulation 14 of EPC 2000 relaxes the language in which European patent applications may be prepared, e.g. the application may be filed in any of the languages, provided that a translation of the patent application in any of the languages of English, French or German is filed within two months of filing the application.
Singularity of invention
The EPc stipulates that if the EPO finds that a PcT application which has entered the European phase lacks singularity when it produces a supplementary search report, it will only produce a partial search report for the first invention in the claim, and will allow the applicant to request searches of the other technical solutions if the applicant pays a supplementary search fee. However, EPC2000 has been substantially revised, and the applicant's negligence has been strictly stipulated that when EP0 conducts a supplementary search on an international application that enters the European phase and considers that the application lacks unity, it will only produce a partial search report on the first invention of the claims and no longer give the applicant the opportunity to conduct a supplementary search by paying the supplementary search fee, which is applicable to the application that enters the European phase on or after December 13, 2007, and all applications that enter the European phase on or after that day will be subject to a partial search report. This provision applies to all PCT applications that enter the European phase on or after 1 2 1 3 2007.Rule 1 1 2 of the EPc Regulations is repealed. Nevertheless, it is worth mentioning that Rule 64 of the EPC2000 Regulation also retains the opportunity for applicants to conduct a supplementary search by paying a supplementary search fee within a period of 2-6 weeks.
Rule 164 of the EPC2000 Regulations provides that where the EPO is of the opinion that a PCT application which has entered the European phase lacks unity of invention, it will proceed with the examination on the basis of two possibilities: either, if the EPO is not the international searcher of the application, the invention which is the subject of the first claim will be used as the basis of the examination in the supplementary European patent search. However, prior to the supplementary search, the applicant may submit amendments to the claims to ensure that the invention sought to be licensed is the first-mentioned invention. Secondly, if the EPO is the international searching authority for the application, the applicant will be asked to select one of the inventions for examination only if more than one invention is searched in the international phase.
It is therefore very beneficial for the applicant to recognize the lack of unity as early as possible before the application enters the regional phase of the EPO, and to file a claim amendment to ensure that the invention sought to be entitled is the first invention. This avoids any time disadvantage to the applicant on the one hand and improves the efficiency of the patent office on the other. Of course, the applicant can take the initiative to file a divisional application before the previous case is closed.
Continuance of European Patent Applications
Continuance of proceedings is a fast and efficient way to gain more time for the completion of the proceedings or the substance of the matter, and the new provisions of Article 1 21 of the EPC 2000 relating to the continuation of the proceedings have considerably extended the applicability of continuation of the proceedings to virtually all the time constraints (including those imposed by the European Patent Office and the EPC) such as the non-payment of fees for filing, searching, designation and examination, and the failure to pay the fee for filing, searching, examination and prosecution. For most of these time limitations, re-establishment of rights may be the only recourse available. In addition, EPC2000 retains the majority of the formal procedures for requesting continuation of the authorization.
Re-establishment of Rights
The remedy of re-establishment of rights enables an applicant or patentee to recover all or part of the rights lost as a direct result of lapse of time, and EPC2000 has moved most of the provisions relating to re-establishment procedures and time limits to the Regulations, which is broadly in line with current practice.
Although under EPC2000, the re-establishment of rights is excluded from the time limit within which an application may be made for continued approval of the remedy. However, re-establishment of rights would be a very useful recovery mechanism for patent applications that have lost their rights by missing the priority period, the request for continuation of examination, and the relevant deadlines for opposition and opposition appeal proceedings.